An intellectual property right is only as good as the ability to enforce it; and in Vietnam, the ability to enforce copyright still leaves much to be desired.
Despite improvements to the legislation, copyright owners still experience difficulty when it comes to enforcement. One of the main reasons for this is the lack of an appropriate ‘copyright assessment organization’.
The notion of ‘IP assessments’ was introduced into Vietnam’s IP enforcement process because of the general lack of IP expertise that exists in both the relevant administrative agencies and the courts. In order to assist IP owners, as well as the agencies and courts, the IP Law provided for the establishment of ‘assessment organizations’. These are authorized to provide infringement assessments either to the parties themselves, or to the administrative agency or court handling the infringement action. Although such assessments are not binding, they will usually be adopted by the relevant agency or court, particularly in complex cases. The opinions of one licensed IP assessor, the Ministry of Science and Technology (VIPRI), have, for example, been adopted in several complex trade mark and patent cases.
In the absence of an assessment, IP owners can have difficulty proving their case: because there is, as yet, no assessment organization for copyright matters, copyright owners have particular difficulty.
Article 201 of the IP Law makes provision for certain organisations and individuals to provide ‘IP assessments’; these assessments can be requested by both state agencies handling IP infringement matters and IP holders themselves.
Depending on the nature of the request, an IP assessment may include:
- an assessment of the legitimacy of the IP work and the scope of protection;
- an assessment of the evidence of loss and damage; or
- a determination as to infringement.
On 2012, the Ministry of Culture, Sports and Tourism (MoCST) enacted Circular No. 15/2012/TT-BVHTTDL, dated 13 December 2012, which provides guidance on assessment activities relating to copyright and related rights and clarifies the requirements for establishing a Copyright Assessment Organisation (CAO). No such organization has, however, yet been established.
Although assessments are not obligatory, agencies and courts will often not be prepared to make a decision without one.
Dong Tay v QGS
The case of Dong Tay v QGS, one of the few cases involving copyright to reach the courts, illustrates the difficulty that can be caused by the lack of a relevant copyright assessment organization. The Court’s unwillingness to proceed in the absence of an assessment led to considerable delay and uncertainty.
In these proceedings, Dong Tay brought an action for breach of contract in the Da Nang City People’s Court in 2012; QGS counter-claimed on the basis that Dong Tay had infringed its copyright by using a computer program without authorisation. The Court was unwilling to proceed in the absence of an assessment and, in January 2013, sent requests for an assessment to the Department of Culture, Sports and Tourism of Da Nang City (Da Nang DOCST) and the Department of Information and Communication of Da Nang City (Da Nang DOIC). Neither agency, however, was willing to provide one; instead, they referred the matter back to the Copyright Office of Vietnam (COV) under the MoCST.
At that point, the COV indicated that no agency had been authorised to provide an assessment, and the matter seemed to be at a standstill. The Court then went back to Da Nang DOIC for help and ultimately located IT experts willing to provide an assessment. That assessment reached the Court in February 2014.
Some tips for copyright owners
It seems the situation is not likely to change in a hurry – there appear to be no plans, at this stage, to push for the establishment of a CAO.
So … here are some tips for copyright owners looking to enforce their rights in Vietnam in the meantime:
- Register your copyright with the COV. Even though copyright works are protected automatically, registration can be valuable; in particular, it can shift the burden of proof in the event of a dispute.
- Always be prepared to negotiate a settlement out of Court. Most copyright infringement issues in Vietnam are resolved this way. If your case is strong, using local mass media to put pressure on the other party can be a useful negotiating tool.
- Be in a position to recommend well-qualified experts to the administrative agency or Court. In this way, even in the absence of a CAO, it may be possible to have the action dealt with effectively and in a timely manner.
- Work closely with your lawyer from the outset, and endeavour to exhaust all other options before pursuing a formal claim.